Case 2:15-cv-00341-JRG-RSP Document 117 Filed 02/22/16 Page 1 of 3 PageID #: 3056
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`RAYTHEON COMPANY
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`ORDER GRANTING MOTION TO STAY
`Pending before the Court is Defendants’1 Motion to Stay (Dkt. No. 93) which asks the
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`Case No. 2:15-cv-341-JRG-RSP
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`v.
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`SAMSUNG ELECTRONICS CO., LTD., ET
`AL.
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`Court to stay this case because the PTAB has instituted IPR on all claims of the Asserted Patent.2
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`Defendants argue that a stay pending IPR decision is warranted: (1) Plaintiff will not suffer
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`prejudice because the asserted patent is expired, (2) the case is at a relatively early stage, and (3)
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`the PTAB’s decision may significantly simplify the issues in this case (or indeed entirely
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`eliminate the case if all claims are found invalid). (Dkt. No. 93). Plaintiff Raytheon Company
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`(“Raytheon”) opposes a stay, arguing that Defendants have engaged in gamesmanship in
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`discovery and in the timing of their filing of petitions for IPR. (Dkt. No. 109). Raytheon argues
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`that, because not all defendants have agreed to be bound by 35 U.S.C. § 315(e)(1), the non-Sony
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`Defendants could still file additional IPRs and thereby further prolong resolution of this case.
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`1 “Defendants” refers to: Sony Corporation, Sony Corporation of America, Sony Electronics Inc.,
`Sony Mobile Communications (USA) Inc., Sony Semiconductor Corporation, Sony EMCS
`Corporation, Sony Mobile Communications Inc., Sony Mobile Communications AB,
`(collectively, “Sony defendants”), OmniVision Technologies, Inc. (“OmniVision”), and Apple
`Inc. (an indemnitee of Sony and OmniVision) (“Apple”), Samsung Electronics Co., Ltd.,
`Samsung Electronics America, Inc., and Samsung Semiconductor Inc. (collectively, “Samsung”).
`2 IPR2015-01201, Paper No. 6 at 23 (PTAB Dec. 3, 2015) (“ORDERED that pursuant to 35
`U.S.C. § 314(a), an inter partes review is hereby instituted as to claims 1–18 of [Patent No.
`5,591,678]”).
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`1
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`Petitioner Samsung - SAM1002
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`Case 2:15-cv-00341-JRG-RSP Document 117 Filed 02/22/16 Page 2 of 3 PageID #: 3057
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`“District courts typically consider three factors when determining whether to grant a stay
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`pending inter partes review of a patent in suit: (1) whether the stay will unduly prejudice the
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`nonmoving party, (2) whether the proceedings before the court have reached an advanced stage,
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`including whether discovery is complete and a trial date has been set, and (3) whether the stay
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`will likely result in simplifying the case before the court.” NFC Techs. LLC v. HTC Am., Inc.,
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`Case No. 2:13-cv-1058-WCB, 2015 WL 1069111, at *2 (E.D. Tex. Mar. 11, 2015). “Based on
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`th[ese] factors, courts determine whether the benefits of a stay outweigh the inherent costs of
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`postponing resolution of the litigation.” Id.
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`Undue prejudice. This factor favors a stay. The asserted patent is expired, and thus there
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`is no possibility of continuing harm to Raytheon from infringement. Raytheon can only recover
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`damages for past infringement, so prejudgment interest can adequately redress any delay.
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`Moreover, at this juncture the Court will limit the scope of the stay to the instituted IPR only
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`(IPR2015-01201). To the extent Raytheon believes that subsequent IPR petition(s) have been
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`filed for a dilatory or improper purpose, it can advance those arguments in opposing a motion to
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`extend the stay if and when subsequent IPR(s) are instituted by the PTAB.
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`Advanced stage. This factor is neutral. The proceedings are at a relatively early stage:
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`discovery is not yet complete, expert disclosures and expert discovery have not yet taken place,
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`the dispositive motions deadline is several months away, and trial is set for September 2016. See
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`(Dkt. No. 88). However, the parties have exchanged disclosures under Pat. L.R. 3 & 4 and have
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`completed claim construction briefing—these are non-trivial milestones in the patent litigation
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`process. Accordingly, the stage of the case neither strongly favors nor strongly disfavors a stay.
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`Simplifying the case. This factor slightly favors a stay. If one or more asserted claims
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`are invalidated, this will simplify the case by removing those claim(s). Even if the PTAB does
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`Case 2:15-cv-00341-JRG-RSP Document 117 Filed 02/22/16 Page 3 of 3 PageID #: 3058
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`not invalidate the asserted claims, it will simplify the invalidity case to some extent. All
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`Defendants have agreed to be bound by the estoppel provisions of 35 U.S.C. § 315(e)(2),
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`meaning Defendants will be estopped from asserting invalidity in this litigation “on any ground
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`that the petitioner raised or reasonably could have raised during that inter partes review.” (Dkt.
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`No. 93 at 11).
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`Accordingly, Defendants’ Motion to Stay (Dkt. No. 93) is GRANTED and this case is
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`STAYED. The Parties are directed to submit a joint motion on the status of the case no later than
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`TEN DAYS after the PTAB issues a final written decision with respect to IPR2015-01201. It is
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`further ORDERED that all Defendants are bound by the estoppel provisions of 35 U.S.C.
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`§ 315(e)(2) as if each had filed IPR2015-01201 in its own name. See (Dkt. No. 93 at 11)
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`(agreeing to be bound).
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`The stay ordered herein does not cover pending IPR petition IPR2016-0209, which has
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`not yet been instituted by the PTAB. In the event that petition is instituted, Defendants may
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`move the Court to extend the stay to encompass that proceeding.
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`The Court anticipates issuing an order requiring payment of the Court’s technical advisor.
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`Any forthcoming Order to Pay Technical Advisor is not covered by this stay, and the parties
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`shall promptly comply with such order.
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